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Trade Mark Rules 2008

Trade Mark Rules 2008

03/10/08

New trade mark rules governing trade mark procedures at the UK IPO were implemented on 1st October 2008. 

The new rules apply to a wide range of trade mark proceedings, but the most significant changes concern opposition procedures, as follows:

1. The opposition period is to be reduced to two months from the date of publication of the application. However this shortened initial opposition period can be extended by one month.

2. An initial cooling-off period of 9 months and is available upon request, and there is a further possibility, if agreed by both parties, to extend the period to a total 18 months.

3. Also, the new rules provide the Registrar with the power to set a time table (in any proceedings) for parties to file evidence, taking account of the circumstances of each case.  The Registrar also now has the power to direct which issues require evidential support in order to focus attention on the relevant issues. Under the new rules, the Registrar also enjoys the discretion to admit submissions in circumstances where no evidence of fact is required.

The rules relating to opposition proceedings have been amended to allow the high proportion of unchallenged applications to progress through the system more quickly.  The parties to opposition proceedings have been granted more time to negotiate an amicable settlement, or, in cases where this is not possible, the new rules aim to grant the Registrar wider discretionary powers to ensure that the circumstances of each case may be considered in setting time limits and deadlines.  

However 'streamlining' proceedings by reducing the opposition period and the time granted to respond to official actions will place greater pressure upon trade mark owners and applicants alike.  Despite the Registrars wider discretionary powers, the situations in which formal documents and responses filed outside the specified time period will be accepted are likely to be very limited.